In Newcastle Permanent Building Society Ltd v Allan Crew[2009] ATMO 55 the Building Society failed in its attempt to prevent words (Our Town and Our Town Newcastle) that had been used by it in previous marketing campaigns from being registered as Trade Marks for a proposed television series about Newcastle.

The Registrar of Trade Mark’s Delegate decided that he was not satisfied that the Building Society’s residual reputation in its trade mark was extensive enough for the use of these substantially identical trade marks in the entertainment field to deceive or cause confusion in the Australian marketplace.

In University of Western Australia v Gray [2009] FCAFC 116 , the University failed in its appeal against a Federal Court judgment that ownership of an invention relating to cancer treatment belonged to its employee who was appointed to teach and to conduct and stimulate research (originally discussed here).

In a lengthy decision with significant commercial implications, the Full Court totally rejected UWA’s claim against Dr Gray that by reason of his employment he had obligations to UWA in respect of the inventions, and that as a result UWA had proprietary rights in respect of them and of associated patent applications and patents, and that by reason of Dr Gray’s having dealt with the inventions as his own UWA was entitled to obtain certain remedies from him.

In IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14, the High Court has decided that IceTV’s use of some of Nine Network’s time and title information obtained from aggregated program guides did not infringe Nine’s copyright in its weekly schedules. The High Court restored the trial judge’s original decision (see here and here).

The Minister for Innovation, Industry, Science and Research has called for written submissions on proposed reforms to the intellectual property (IP) system.

The reforms aim to:

• reduce barriers in the innovation landscape for researchers and inventors;
• improve certainty about the validity of granted patents; and
• allow patent claims to be resolved faster.

Two discussion papers have been issued:

• ‘Getting the Balance Right’ – Raising patentability standards and giving greater certainty in the validity of granted patents
• ‘Exemptions to Patent Infringement’ – Ensuring that patents do not inhibit research and development in Australia

IP Australia invites any interested parties to make written submissions by 8 May 2009.

The Resale Royalty Right for Visual Artists Bill has been introduced into Parliament. This legislation provides a resale royalty right for Australian visual artists.

The scheme is expected to be in place by 1 July 2009. Under this right, visual artists will have a right to receive a share of sales of their artistic works on the secondary market for all works of art acquired after the legislation comes into effect over a threshold of $1000 at a rate of 5 percent.

The Bill has been referred to the Standing Committee on Climate Change, Water, Environment and the Arts for an advisory report by 20 February 2009.

In Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 the Full Court of the Federal Court of Australia allowed an appeal against the trial judge’s decision that the use by Bickford’s of the name “Monster” for its energy drink was not a misrepresentation by Bickford’s that its drink was associated with Hansen’s “Monster Energy”.

There was no dispute that the similarities between the products could relevantly mislead or deceive for the purposes of the Trade Practices Act and the tort of passing off but the trial judge decided that Hansen failed to prove that as at the date when the conduct commenced, that it had the requisite reputation in the name or goods in Australia. Hansen’s product was sold in USA but not trademarked in Australia.

The Full Court decided that the issue of reputation should be remitted to the primary Judge for reconsideration as he had erred in law by referring to the issue of a target market.

PriorSmart offers a free worldwide patent search facility. It lets you search over 60 different sites using a single interface. .

IP Australia has recently completed a review of the penalty provisions in the Trade Marks Act 1995. The review also considered additional damages in civil actions for trade marks.

IP Australia considers that the maximum penalties for indictable offences should be raised to the same level as in the Copyright Act primarily because of the Commonwealth policy of consistency of penalty levels between similar offences.

IP Australia is seeking written comments by 27 February 2009.

The Privacy Commissioner has pointed out recently (see this Information Sheet) that the privacy consent you obtain from a member on signing up or on applying for a loan may not permit you to send unsolicited commercial email messages ("spam") to the member. SMS messages can be spam.

The Spam Act requires that commercial electronic messages, except where designated as "exempt", meet three conditions. They must:

• be sent with the consent of the recipient
• identify the sender
• include a functional unsubscribe mechanism.

You need to look at the terms of your privacy consent carefully. Does it cover the type of message you are sending?

Does the message identify you? Does it include your ABN and how you can be contacted?

Does it have an unsubscribe mechanism? In the case of SMS messages, does it clearly say how the customer can stop the messages or give an 1800 number to unsubscribe? The mechanism must be functional for at least 30 days after the message was sent and a request to unsubscribe must be actioned within 5 working days.